Nandini Or Nandhini – Similar Or Not?

FACTS

Karnataka Cooperative Society, Respondent, started using the trademark ‘NANDINI’ for milk and milk products from the year 1985. The Appellants, Nandhini Deluxe adopted the mark ‘NANDHINI’ in 1989 in respect of their goods. The goods of both the parties fall under same class 29 and 30 an even though the both the parties have been using their trademark for more than 12 years, the Respondent is the prior user. Irrespective of the goods belonging to the same classes in a broad sense, the Appellant’s goods are different from those of the Respondent, the Appellant is dealing with fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc and the Respondent is dealing only with milk and milk products. The registration of Appellant’s mark on milk and milk products are refused by the Trademark registry, and the Appellant has to explicitly give an affidavit, deleting the word “milk and milk products” from its description.

 
SUPREME COURT HELD

Marks Are Not Deceptively Similar

Firstly, the word NANDINI/ NANDHINI is a generic word as it represents the name of Cow in Hindu Mythology. It is not an invented or coined word.

Secondly, it has been held that even though both the words are phonetically similar, the trademark and logo adopted are completely different when seen in totality; further the name and style of business of both parties are different from each other since one deal in milk and milk products, the other deals in various foodstuffs except milk and milk products. The Appellant used the word DELUXE along with Nandhini, followed by the tagline ‘the real spice of life’, and a device of lamp, whereas the Respondent have used simply used the word ‘NANDINI’ below the picture of a cow encompassed in a circle. This pictorial depiction of two trademarks was sufficient to show that there is hardly any similarity between the two marks.

No Absolute Monopoly

Referring to the case of Vishnudas Trading as Vishnudas Kushandas, the Court held that ‘the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trademark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of this Section do not cover the same class of goods’.  The Court also held that since the facts have not satisfied the conditions of Section 11(2) of the Trademark Act, therefore, the Respondent cannot claim protection of well-known mark. Also it was held to the case of ‘concurrent user of trademark’ since no document or evidence was provided by the Respondent to show that they have acquired distinctiveness within four years between Respondent’s first adoption or Appellant’s first adoption.

The Court concluded that both the marks are not capable of causing confusion in minds of public and are not deceptively similar. The registration of Appellant’s mark was allowed subject to the condition of deleting ‘milk and milk products’ from their registration.

 
CONCLUSION

Before the Judgment, the use of deceptively similar trademarks in different classes were permissible and almost never disputed, but post- judgment, use of same or deceptively similar trademark in the same class has been permitted, if the marks are visually different from one another. Proprietor of the trademark cannot enjoy monopoly over the entire class of Goods – Supreme Court. This judgment has come as a huge relief to the traders who have been in business of long and have similar trademarks to those of the already existing trademarks, in similar class but different businesses. On the Contrary, the Judgment has also opened the doors of concern such as mere similarity of words is insufficient to reason infringement, registration of a mark in one class in no assurance that similar competing mark cannot be registered in the same class unless well-known, which in itself is hard to prove.

 

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

Reference:

[1] M/s Nandhini Deluxe vs. M/s Karnataka Co-operative Milk 2018 (9) SCALE 202

Leave a Reply

Archives

  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010